Thu 19. Sep 2024, 20:30
In the dispute over the domain asweev.com, aSWEEV Co. failed due to a lack of presentation and poor domain management: newly founded, it had neglected to register the appropriate .com domain.
The US-based aSWEEV Co., which operates in the field of electric vehicles, believes that its rights have been infringed by the domain asweev.com and has initiated UDRP proceedings before The Forum. It attached a certificate of incorporation dated May 29, 2024 and claims that it filed a declaration of intent to use the trademark (“Intent-to-Use Trademark”) “ASWEEV” with the US Patent and Trademark Office (USPTO) on May 30, 2024. In addition, it operates its website under the domain asweev.co, as evidenced by a screenshot, which it uses, among other marketing measures, to make its brand known to retailers, the public and investors. The domain asweev.com is confusingly similar to its trademark “ASWWEV”, the opponent has no right or legitimate interest in the domain asweev.com and it has registered it in bad faith and is also using it in bad faith. The opponent registered the domain asweev.com on May 30, 2024 and offered it for sale; he did not appear in the proceedings. Sandra J. Franklin, a US attorney practicing as a legal advisor and mediator in intellectual property law, was appointed as the decision-maker.
Franklin dismissed the complaint because the complainant did not meet one of the three elements of the UDRP procedure (Forum, Claim Number: FA2408002112107). In assessing the dispute, it limited itself to the uncontradicted submission of the complainant. Franklin did not consider the first element, the existence of a trademark of the complainant, to be fulfilled. The complainant's submission lacked important information and evidence. For example, it did not submit or provide evidence as to when it set up its website and how many visitors there were to the site. Furthermore, it did not provide any information about its advertising expenditure or the media that reported on it in order to prove its public perception. The complainant refers to previous UDRP cases in which the respective complainants were able to prove their awareness among consumers with evidence; however, the complainant itself does not provide any evidence. It remains to be seen whether the complainant obtains trademark rights through commercial use of its offer. The declaration of intent to use the trademark can be regarded as an indication. However, the date of the application is identical to the date of the domain registration. This fact, in addition to the absence of evidence, led Franklin to conclude that the trademark application in this case was not actually noticed. She saw the favorable opportunity of the opponent's registration of the domain used, but it was up to the complainant to present her case and prove the rights to the “ASWEEV” trademark. The complainant had not even expressly asserted common law rights, let alone proved them. Franklin found that the appellant had failed to meet her burden of proof. She had thus failed to meet the requirements of the UDRP, which is why the complaint fails. Franklin found that the complainant had failed to satisfy any of the three elements of the UDRP and therefore decided that the domain asween.com should remain with the opponent.
The case is another example of poor domain management. The newly founded company failed to secure the desired .com domain in good time. It could have registered the domain asweev.com on the day it was founded, May 29, 2024. Even then, it would have been close. It is not unfounded to assume that the opponent, who remained without a proper name but is based in Hong Kong, had an eye on the USPTO filings and reacted to the complainant's “trademark application”. The latter, on the other hand, did not register the domain asweev.co used by it until June 27, 2024, which makes its flimsy argument even weaker. Franklin had spared itself a look at the WHOIS at this point, and in any case did not comment on it in its decision. All in all, one can only advise any company to register (or buy) the necessary domains at an early stage, ideally before the company is founded. Once the company is up and running, however, a WHOIS update should be carried out immediately and the company should be registered as the owner - and not a person such as the web designer, one of the founders or some other helpful spirit.
The UDRP decision on the domain asweev.com can be found at:
https://www.adrforum.com/DomainDecisions/2112107.htm